APPs (or application software) are one of the biggest drivers of innovation for smartphones, both for users and developers. On the developer side, the relative ease of getting an APP into the store or marketplace for a particular device means that you can open up a vast audience for your program with very few roadblocks and very little overhead. The benefit to users is that you can find an APP for just about any interest or topic under the sun. With well over a million APPs available, and over 75 billion downloads through Apple alone, there truly is something for everyone.
That low overhead and ease of entrée to the APP market has a flip side, though. If you are starting a new business around an APP you are building you may ask yourself, “Do I really need to trademark the name of this APP?” It can seem unnecessary to go through all the steps and cost to protect the rights to the name of your creation with a federal trademark. You may just assume that if someone sees you are already using a specific name, they will just choose a different name for their APP.
That being said, the answer to whether you should trademark your APP’s name is “Yes,” for several reasons – whether or not they involve revenue. Let’s take a closer look at why.
Registering a trademark ensures you that your APP name is cleared for use.
A major part of the trademark application process involves trademark research to ensure that you’re not infringing on an existing trademark with your intended APP name. By conducting a thorough search, you not only give yourself a better chance of a successful application – you protect yourself from trademark challenges from an existing APP if there does happen to be a similar or identical one already on the market. Keep in mind – you do not have to have the exact same name as an existing APP to be considered infringing. If the name you’re using is close enough to be considered confusingly similar to another one, you may find yourself receiving a cease and desist letter, and, needing to change the name of your software. This puts you in a bad position of having invested development time and effort and having to start over from square one with a new name. Going through the trademark application process is the only certain way to be sure that you’re not infringing on an existing mark – if you are, a trademark search run by an experienced attorney can give you an important heads-up.
A registered trademark gives you maximum protection from infringers.
Once your APP goes into the Apple Store or Android Marketplace, it has the potential to become very popular – this happens all the time, where an APP comes seemingly out of nowhere to become the next big craze. Inevitably what happens next is that a sea of imitators follows suit, all trying to create names as close as possible to yours, while toeing the line of trademark infringement. The idea behind these imitators is nothing more than to confuse consumers into downloading their APP instead of yours.
With a registered trademark, you gain several benefits to prevent this from happening. You have a record of ownership of the trademark, and a proven date of first use. You also have the name of your APP already registered with the USPTO. It is important to remember that it generally takes about 8 months to get a trademark registration (after you submit your trademark application to the USPTO). Therefore, if you wait until an infringement occurs to try to register your trademark, you will be in the awkward position of needing to wait 8 months before you can have an enforceable registration.
A registered trademark is the best way to have infringing APPs removed.
On the same page as the above point, often a lawsuit is not necessary – you simply want the infringing APP from an imitator removed from the marketplace. With a registered trademark, you can submit this official proof of your right to the exclusive use of a name to whichever marketplace your APP is available on, and have their support in removing any infringing APPs. In most cases the APP STORE and Android marketplace will only help you remove an APP with a similar name if you have a federally registered trademark.
You have the presumption of national ownership should anyone make a claim against you.
With so many APPs out there, and so many developers, it’s no surprise that sometimes people just come up with the same idea independently. With a registered trademark, you have the presumption of ownership of a mark and proven usage priority. This gives you the most amount of leverage, especially against an APP that doesn’t have a registered trademark. Granted, another company can rebut the presumption you are the rightful owner of the trademark — but only by showing they had the APP available for download first. The bottom line is that having the registration gives you a lot of leverage in any negotiation. By filing a trademark application as early as possible in your development process, you’re protecting your name, the hard work will you put into building equity into that name, and, if you choose to offer a paid product, you gain protection over your potential revenues – making it more than worth your while to register the mark.